EEC Advocate General Jacobs has issued an opinion disagreeing with a Court of First Instance decision, recommending that OHIM reject a trademark application filed by the Wrigley company for the mark DOUBLEMINT, on the grounds that it is descriptive, either of a gum which contains two types of mint, or of a gum which has, uh, double the normal amount of mint.

AG Jacobs distinguished this from his previous opinion in BABY-DRY where he found that the term was registrable for diapers because:

“Whilst each of the two words might form part of expressions used in everyday speech to designate the function of babies nappies, their syntactically unusual juxtaposition was not a familiar expression in English, either for designating nappies or for describing their essential characteristics.”

DOUBLEMINT did not have syntactically unusual juxtaposition. MINTDOUBLE would have. In finding DOUBLEMINT unregistrable, AG Jacobs cited the common rationale for barring registrability to descriptive terms, namely, as the Germans put it, “freihaltebedurfnis,” the need to keep free [for other merchants in the trade to use].

In contrast, the term BABY-DRY “is not suitable, in the ordinary language of trade, as a designation of characteristics of the product in question” and therefore there was no public interest in preventing its monopolization.

Wrigley possibly could have overcome the freihaltebedurfnis argument with a better showing of secondary meaning. It did proffer registrations it held for the mark in most EEC countries. However, these registrations were discounted by the AG, in part, because they covered stylized or design versions of the mark, and thus didn’t prove registrability of the word mark alone.

ADDENDUM: Amadeu Abril i Abril correctly took me to task for the first version of this piece. This was an AG Opinion, not a decision of the ECJ. I had incorrectly stated that the AG “reversed” a lower court decision – he can’t – he can merely recommend that the ECJ reverse the decision. His opinion carries great weight but the ECJ is not bound to follow him. In other words, it is conceivable the ECJ can ultimately find DOUBLEMINT to be registrable.

Here is the weakness and strength of blogging – quck and easy to make mistakes and corrections.